September 12, 2018
Territorial Jurisdiction in Trademark Infringement Cases– In this recent case, the Delhi High Court elaborated on the aspect of territorial jurisdiction in trademark infringement cases. The Court made a remarkable observation by holding that in this day and age of e-commerce and online businesses, the Defendants’ conduct of seeking franchise queries in Delhi would itself confer jurisdiction on the Delhi High Court under Section 20 of the CPC
Case name: Burger King Corporation vs Techchand Shewakramani & Ors.
The Plaintiff filed the present suit seeking permanent injunction restraining infringement of trademark, passing off, damages, etc. in respect of the trademark “Burger King” and “Hungry Jack’s” both as a trademark as also part of their corporate names. The Defendants have filed the above application seeking rejection of the plaint on the ground of lack of territorial jurisdiction.
The Delhi High Court in the case noted that the Defendant’s website provides for a franchise form i.e. people can fill up the form and ask for being a franchisee of the Defendants – Burger King and the Defendant’s website further claims that with the above text, the logo of Ras Resorts and Apart Hotels Pvt. Ltd. appears and in the list of “Coming Soon” and “Street Cart Locations”, Delhi is clearly mentioned.
The Delhi High Court in view of the facts and circumstances of the case held that Delhi High Court had the jurisdiction on the basis of the following observations:
- That the Defendants are actually promoting their business and using the mark Burger King within the jurisdiction of this Court. That it would be too stringent a test to hold that unless and until an outlet is set up, there would be no jurisdiction. In this day and age of e-commerce and online businesses, the Defendants’ conduct of seeking franchise queries in Delhi would itself confer jurisdiction of this Court under Section 20 of the CPC.
- That the provisions of Section 134 of Trademark Act and Section 62 of the Copyright Act are in addition to and not in exclusion of Section 20 of the CPC. If the Plaintiff can make out a cause of action within the territorial jurisdiction of this Court under Section 20, no reference needs to be made to Section 134.
- That in a case involving trade mark infringement, infringement happens when a person “uses in the course of trade” any mark without the owner’s consent. Thus, use of a mark is the cause of action in an infringement as also in a passing off action. If use takes place in a territory where the suit is filed, that Court has the jurisdiction to entertain the suit. When there is use of a mark, there is a cause of action to sue, where the use takes place.
- What constitutes “use of a mark”?
That jurisdiction of a Court in a trade mark action, could be invoked where there is use upon or in relation to goods. The phrase “in relation to” has been interpreted to include advertising, promotion, publicity, etc. Thus, in addition to actual sale of goods and providing services, if a person advertises his or her business under the mark in a territory, promotes his or her business under the mark in a territory or for example invites franchisee queries from a particular territory, sources goods from a particular territory, manufactures goods in a particular territory, assembles goods in a particular territory, undertakes printing of packaging in a particular territory, exports goods from a particular territory, it would constitute `use of a mark’.
- That the concept of infringement and passing off is not fixed in time. It is elastic in nature inasmuch as use of a mark is continuous and each and every use constitutes a fresh cause of action. In a suit where infringement and passing off is complained of, basing the jurisdiction, only as per the date of the plaint would not be the correct approach.
The entire case can be accessed here.